T 673/09 – Forget The Figures

For a claim to lack inventive step, it is not necessary that all its features be shown in the prior art. Other considerations may prevail, such as what the skilled person would do under certain circumstances. The present decision illustrates this fact.

Claim 1 before the Board read (in English translation):

Storage device with variable storage capacity, in particular for storing rod-shaped products, the storage device comprising:

[a] an input area (47), an output area (48) and

[b] a continuous conveying element (62) connecting the input area (47) to the output area (48) in such a way that the storage device (10) operates on the principle of “first in-first out” (FiFo store),

[c] the conveying element (62) being guided by guide elements in a looping manner from the input area (47) to the output area (48), whereby

[d] the continuous conveying element defines a multi-layered storage area, normally provided with products, namely a so-called full strand (66, Volltrum),

[e] and a multi-layered return area, normally free of products, namely a so-called empty strand (67, Leertrum)

[f] the two areas being compensated in length, depending on the state of fullness of the storage device (10), in such a way that the overall length of the conveying element (62) is constant,

[g] wherein the full strand (66) and the empty strand (67) are arranged in a common horizontal plane and comprise separate guide elements (19,20,33,34,51,53),

characterised in that

[h] wherein the full strand (66) and the empty strand (67) are arranged behind one another in the longitudinal direction of the storage device (10) and

[i] to each layer of the full strand (66) is allocated a corresponding layer of the empty strand (67) in the same plane, and in that

[j] the storage device (10) comprises along its both longitudinal sides guide sheets (61) for guiding the conveying element (62)

[k] so that the full strand (66) and the empty strand (67) use the same guide sheets (61) for guiding the conveying element (62).

In what follows, the Board examines whether this claim involves an inventive step. D2 is found to be the closest prior art.

*** Translated from the German ***

[4.3] The storage device according to claim 1 differs from the one of D2 by a first group of distinguishing features (hereinafter: “first group of features”), i.e. the part of feature [g] concerning the arrangement of full strand and empty strand, as well as feature [h]. According to those features, the full strand and the empty strand are arranged in a common horizontal plane and are arranged behind one another in the longitudinal direction of the storage device.

Moreover, the storage device according to claim 1 differs from the one of D2 by a second group of distinguishing features (hereinafter: “second group of features”), according to which – according to feature [i] - to each layer of the full strand is allocated a corresponding layer of the empty strand in the same plane, and – features [j] and [k] - the storage device comprises along its both longitudinal sides guide sheets for guiding the conveying element so that the full strand and the empty strand use the same guide sheets for guiding the conveying element.

Effect of the distinguishing features / Problem

[4.4] The first group of features (part of feature [g] and feature [h]) concerns the spatial arrangement of full strand and empty strand. As discussed during the oral proceedings (OPs), it has the effect that the space requirements of the storage device is modified with respect to the device according to D2. Instead of the arrangement of Figure 1 of D2, where empty strand and full strand have the same longitudinal direction and are disposed on top of each other, they are, according to feature [h], arranged behind one another in the longitudinal direction of the storage device.

The effect of the second group of features (first part of feature [g] and features [i] to [k]) consists in that, based on an arrangement of the full strand and the empty strand corresponding to the first group of features, use is made of an opportunity offered by the arrangement of the guide sheets for the full strand and the empty strand, as has been mentioned by the [opponent].

Considering the first group of features, the first problem [solved by] claim 1 with respect to the storage device according to Figure 1 of D2 can be said to configure the storage device so that it fits into a certain available volume.

This problem essentially corresponds to the one retained in the impugned decision according to which, starting from D2, a storage device that is compact as to its height is to be developed. […]

Considering the second group of features, the second problem [solved by] claim 1 with respect to the storage device according to Figure 1 of D2 can be said to design the guide sheets, which are distinct for the full strand and the empty strand, taking into account the respective arrangement of the full strand and the empty strand.

As the second problem uses the opportunities offered by the arrangement of full strand and empty strand according to feature [h], it has to be considered to be subordinate to the first problem.

Obviousness (Naheliegen)

[4.5.1] When assessing inventive step, one first has to check to what extent the solution to the first problem according to claim 1, wherein, according to the first group of features, the full strand and the empty strand are arranged behind one another in the longitudinal direction, is to be considered obvious or not […].

If, as in the present case, the solution to the first problem is not considered to be inventive, one has then to examine to what extent, starting from a storage device wherein the full strand and the empty strand are arranged according to the first group of features, an inventive step is involved when the existing guide sheets of the full strand and the empty strand are designed according to the second group of features.

[4.5.2] As far as the first step is concerned, the Board considers that the [opponent] is right in pointing out that the question of how to arrange the empty strand with respect to the full strand depends on the intended use of the storage device. For instance, if the storage device is used as buffer storage in the manufacture and packaging of cigarettes, then the arrangement or the layout of the storage device, and in particular the spatial arrangement of the full strand and the empty strand is determined by the space that is available for the storage device between adjacent machines that are to be connected by means of the storage device in view of the product flow.

Starting from the storage device of Figure 1 of D2, the Board considers it to be obvious to arrange the full strand and the empty strand behind one another in a common horizontal plane, according to the first group of features if the space required is available, and thereby to go beyond the arrangement of the full strand and the empty strand depicted in Figures 2, 4 and 5 of D2.

The Board considers that such an arrangement is indeed required when, as pointed out by the [opponent], the space available allows for such an arrangement.

Therefore, the incitation to arrange the full strand and the empty strand behind one another, which has been contested by the [patent proprietor], results from the space that is available for the installation of the storage device alone.

This assessment is also supported by the fact that, as pointed out by the [opponent], the full strand and the empty strand according to D2 can be seen as two independent modules which, as can be seen from Figures 2 to 5, can be arranged differently with respect to each other.

[4.5.3] It is indeed true that, as has been argued by the [patent proprietor], there the full strand and the empty strand are in each case arranged in different horizontal planes, which is different from feature [g]. However, the Board is of the opinion that this cannot prevent the skilled person from arranging the full strand and the empty strand in a common plane, differently from D2, if the available space requires him to do so, which corresponds to the arrangement of full strand and empty strand according to Figure 1 of D5.

If the available space does not allow for an arrangement of the full strand and the empty strand according to Figure 1 of D5, then the skilled person will modify the arrangement of the full strand and the empty strand so as to adapt to the actual conditions. One of the options mentioned during the OPs is to arrange the full strand and the empty strand in a common horizontal plane, wherein the empty strand is provided in the space delimited by the full strand, such as shown in Figure 2 of D5.

The Board is unable to adopt the argument of the [patent proprietor] according to which the mere fact that an arrangement wherein the full strand and the empty strands are arranged according to the first part of feature [g] and to feature [h] is not shown in the present prior art allows to conclude that the solution of the first problem involves an inventive step. On the one hand, the aspect of whether a solution according to the invention is depicted concerns the question of novelty, which is not relevant in view of D2. On the other hand, a figure showing the arrangement of full strand and empty strand according to claim 1 – which is not provided in the prior art cited – is not relevant for the assessment of inventive step when, as explained above, it has to be assumed that the skilled person would arrive at the arrangement of full strand and empty strand according to the invention without any inventive activity when the space that is available requires him to do so.

In this context, the Board can not see why the statement of the summons to OPs, according to which “in contrast to the impugned decision, when assessing inventive step, it is not quite relevant whether other inventive solutions for the problem under consideration exist – what counts is whether the solution that is defined in claim 1 is obvious or not” is incorrect in the present case. As a matter of fact, as explained above, the absence of a figure in the prior art showing a storage device having the full strand and the empty strand arranged as in features [h] and [i] cannot be understood to constitute an indication of inventive step of this arrangement is to be considered obvious starting from D2 as closest prior art.

[4.5.4] The further argumentation of the [patent proprietor] according to which substantial, non obvious modifications would be needed to transform the superposed arrangement of the full strand and the empty strand according to Figure 1 of D2 into an arrangement according to claim 1, where they are arranged behind one another, cannot persuade the Board because no measures going beyond what a skilled person would do were mentioned. In this context, the Board considers that the displacement of the tensioning device 25 and the need to guide the conveyor 8 from the full strand to the empty strand and back to the full strand in a different way than shown in Figure 1 do not go beyond what a skilled person would do. Moreover, as mentioned in the OPs before the Board, there are no features directed to the displacement and return of the conveyor in claim 1.

[4.5.5] As far as the assessment of inventive step related to the above mentioned second problem is concerned, the Board is of the opinion that in the present case, where the arrangement of the full strand and the empty strand behind one another is to be considered as obvious, it is an obvious option to design and arrange the full strand and the empty strand in such a way that there is a corresponding position of the empty strand in the same plane for each position of the full strand. As explained by the [opponent], this follow almost as a necessity from Figure 1 of D2, where full strand and empty strand are substantially identical. Independent from that, such a design and correspondence of full strand and empty strand also follows in an obvious manner from the consideration that the guide bars 26 for the full strand and the empty strand, which according to Figure 1 of D2 are distinct, lie in the same planes and that they can be combined in order to simplify the construction of the storage device according to feature [k].

In this context, the Board considers that the [opponent] is right in considering that the design and the arrangement of the full strand and the empty strand according to the second group of features results from taking advantage of the opportunity that automatically results from the spatial correspondence (Lagezuordnung) of full strand and empty strand according to feature [h] while taking into account the guide bars 26 according to D2. Therefore, it may remain open to which extent the common guiding of the conveying element for the full strand and the empty strand of D7 (Figure 3) can be considered as a hint for using the same guide sheets within the full strand and the empty strand.

[4.5.6] The argument of the [patent proprietor] according to which the design of the storage device according to the second group of features cannot be considered to be obvious because there were no constructive hints in D2 cannot be endorsed. On the one hand, it is neither evident nor has it been demonstrated that the design and the arrangement of the full strand and the empty strand and the design of the guide sheets according to this group of features requires measures that go beyond what a skilled person would do. On the other hand, no such measures are found in claim 1.

[4.5.7] As mentioned above, neither the solution to the first problem nor the subsequent solution to the second problem involve an inventive step. Therefore, the storage device according to claim 1 cannot be considered to involve an inventive step (A 56).

The patent was finally revoked.

I do not say that the Board was wrong in its assessment, but what strikes me here is that the Board uses partial problem approach (see Guidelines, C-IV 11.6) without explicitly mentioning it. However, this approach is to be used only when the underlying problems are independent. The very formulation of the partial problems in this decision seems to indicate that they are not independent.

Be that as it may, based on decision like this one, one could say that inventive step can be compared to resistance in a parallel circuit. If there is one low resistance path (i.e. obviousness) between point A (a document belonging to the prior art) and point B (the claimed subject-matter) then the fact that there are high resistance (possibly inventive) paths between those points does not alter the fact that the overall resistance (inventiveness) is low between those points.

To download the whole decision (in German), click here.

The file wrapper can be found here.